Not a toothless prohibition: Even implicit step of treatment by surgery makes method claim unpatentable under the EPC

Art. 53(c) EPC prohibits the grant of European patents in respect of "methods for treatment of the human or animal body by surgery". The EPO Boards of Appeal recently had the opportunity to clarify the boundaries of this provision in a case involving a patent related to tooth replacement technology (T 1631/17, available only in German). 

I am NOT coming to the dentist's

EP 1 901 676
relates to a "method and material kit for the production of tooth replacement parts". It was granted in 2013 and its only independent claim relates to a method of producing tooth replacement parts. 

An opposition was filed and eventually withdrawn against the patent. However, the Opposition Division decided to go ahead with the opposition proceedings nevertheless, which it is allowed to do if it is likely that the patent will be limited or revoked even "without further assistance from the opponent(s)" (see the EPO Guidelines for Examination, Part D-VII, 5.2 and 5.3). The patent was eventually revoked for violation of Art. 53(c) EPC. The patentee appealed. 

The Board of Appeal first underscores that independent claim 1 does not contain any feature explicitly involving a method of treatment by surgery. However, the Board explains (by reference to the Enlarged Board's decision in G 1/07) that Art. 53(c) EPC also excludes the granting of patents that involves such a step even implicitly. If a surgical method of treatment is an essential feature of the invention (whether implicitly or explicitly), the invention is excluded from being patentable under Art. 53(c) EPC. 

As the Board explains, 

If the claim lacks essential features of the invention, these must be read into the claim by way of claim interpretation. 

Claim 1 of EP'676 involves creating two successive impressions of part of the patient's dentition. The description of EP'676 sets forth that the patient's missing tooth substance must be temporarily filled in before starting to perform the first of the two impressions. Hence, the preparation of the patient's teeth falls within the scope of the claimed method, even though it is not explicitly mentioned in the claim. In other words, the claimed method cannot be performed without directly performing this "preparatory" step, as otherwise the claimed method would not produce the claimed function. 

Preparing the patient's teeth is a step that can only be performed directly on the patient. It constitutes a step of "treatment of the human body by surgery" because it "involves extracting body tissue in an invasive manner". 

Given that the patented method implicitly and necessarily involves a step of treatment by surgery, it is not patentable under Art. 53(c) EPC. 

Mewing with professional care and expertise

Comment 

This decision must be traced back to the Enlarged Board of Appeal's ruling in G 1/07 (Treatment by surgery/MEDI-PHYSICS), directly referred to in the decision. G 1/07 enshrined the principle that a method, which "encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise", is not patentable under Art. 53(c) EPC. G 1/07 also set forth that this issue cannot be solved by simply omitting the surgical treatment step from the claim, when it remains an essential feature that is necessary to carry out the invention. 

Two aspects still distinguish the decision at hand from G 1/07. 

First, the patent claim in the decision at hand differs from the one at stake in G 1/07 in that the step of treatment by surgery was at no point explicitly mentioned in the patent claim. Only the subsequent claim interpretation performed by the Board showed that the claim necessarily encompasses that step. The exclusion from patentability thus cannot be circumvented by hiding the problematic feature in the description, since the claims are always interpreted by reference to the description. 

Second, it would not have seemed obvious to this Kat that the condition set out in G 1/07, a "substantial physical intervention on the body […] which entails a substantial health risk even when carried out with the required professional care and expertise", also applies to temporarily filling a patient's tooth substance. A short explanation on whether the Board considers that this fulfills the "substantial health risk" standard of G 1/07, or whether this standard has knowingly been broadened, would have been welcome.
Not a toothless prohibition: Even implicit step of treatment by surgery makes method claim unpatentable under the EPC Not a toothless prohibition: Even implicit step of treatment by surgery makes method claim unpatentable under the EPC Reviewed by Peter Ling on Friday, October 23, 2020 Rating: 5

5 comments:

  1. This case is of particular interest to me as G 01/07 is one of GE Healthcare's cases. For me the BoA categorisation of temporarily filling a patient's tooth substance as a "substantial physical intervention on the body […] which entails a substantial health risk even when carried out with the required professional care and expertise" goes a lot further than G 01/07. In G 01/07 the surgical step encompassed injection of contrast agent into the heart, which was a significant factor in the EBoA conclusion in my opinion.

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  2. This decision is perfectly justified and does not go over G 1/07. The decision leading to G 1/07 might have been injection of contrast agent into the heart, which undoubtedly represents a surgical step.

    I would however like to remind you of the Catchword 2c in G 1/07.
    2c. Whether or not the wording of the claim can be amended so as to omit the surgical step without offending against the EPC must be assessed on the basis of the overall circumstances of the individual case under consideration.

    First question: would you like the method carried according to EP to be carried out by the dental’s practice cleaning lady?

    Now let’s look at the method
    The first step of the method is to rebuild provisionally the missing tooth substance so as to get an impression of a human dentition in which missing tooth substance is replaced, cf. [021] or [026]. Who else but a dental surgeon can rebuild the missing tooth substance?

    This provisionally missing tooth substance is then removed and the teeth prepared for receiving the final tooth replacement, cf. [027]. Here again, who else but a dental surgeon can prepare the teeth before the second impression. Then a second impression is taken, and the final tooth replacement is then prepared from both impressions.

    In the light of Catchword 2c of G 1/07, the method cannot be carried out without surgical steps, although those steps are not mentioned in the claim, so that the revocation is fully justified.

    The patent should never have been granted as the positive IPER even mentioned that before the first imprint the teeth have to be restored. It is surprising that this did not lead to a warning that at least when entering the regional phase before the EPO, an objection under Art 53,c) is likely to be raised. As the IPER was positive, the grant was immediate. At least the chairman of the ED should have reacted.

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